The most vocal Supreme Court justices in the Stanford v Roche oral argument yesterday seemed troubled by the prospect of finding in favour of Stanford​

The Court is considering the question “whether a federal contractor university's statutory right under the Bayh-Dole Act in inventions arising from federally funded research can be terminated unilaterally by an individual inventor through a separate agreement purporting to assign the inventor's rights to a third party”.

Stanford claims that Mark Holodniy’s invention for a method of determining the effectiveness of an HIV therapy belongs to Stanford, even though he transferred rights to the invention to Roche.

While some expressed concern about the ramifications of finding for Roche as well, many of the justices said that Stanford’s position departs significantly from traditional notions of patent law.

“They clearly saw that reading the Bayh-Dole Act as a vesting statute would be a big change,” said Steve Chang of Banner & Witcoff. “A lot of their questions showed a genuine concern [about] whether that would disrupt things.”

The Supreme Court has affirmed the Federal Circuit’s decision in Stanford v Roche, finding that the Bayh-Dole Act does not automatically vest title to federally funded inventions in federal contractors​

“Although much in intellectual property law has changed in the 220 years since the first Patent Act, the basic idea that inventors have the right to patent their inventions has not,” said the Court.

In the majority opinion, penned by Chief Justice John Roberts, the Supreme Court said Bayh-Dole applies to the priority of rights between the federal government and a federal contractor in an invention that already belongs to the contractor. It, therefore, does not supplant the Patent Act.

The Supreme Court decision in Stanford v Roche will have little effect overall, but may result in more stringent monitoring of employees and tighter contract drafting at universities, commentators told Managing IP

“I think universities will be looking carefully at the form of assignments they ask faculty to sign when they join the university,” said Ashley Stevens, special assistant to the vice president of research at Boston University. “If they use something like Stanford’s form of assignment, then they probably already have changed that.”

But regarding what he referred to as “doom and gloom” headlines speculating that universities no longer own any patents following the decision, Stevens said “absolutely not”.

“This is a very, very narrow decision,” he added.

The Supreme Court ruled in favour of Roche yesterday, rejecting Stanford University’s assertion that the Bayh-Dole Act automatically vested title to federally funded inventions to the contractor.

The 7-2 decision was issued with a dissent from Justices Stephen Breyer and Ruth Bader Ginsburg, who seemed troubled that the case turned on slight differences in the language of the contracts signed by Stanford researcher Mark Holodniy.